{ "id": 4078730, "name": "EVONIK ENERGY SERVICES GMBH, Plaintiff v. FRANK EBINGER, EBINGER KATALYSATORSERVICE GMBH & CO. KG, ENVICA GMBH N/K/A EBINGER GMBH, ENVICA KAT GMBH, AND EBINGER VERWALTUNGS GMBH Defendants", "name_abbreviation": "Evonik Energy Services GmbH v. Ebinger", "decision_date": "2011-06-07", "docket_number": "No. COA10-1299", "first_page": "385", "last_page": "392", "citations": [ { "type": "official", "cite": "212 N.C. App. 385" } ], "court": { "name_abbreviation": "N.C. Ct. App.", "id": 14983, "name": "North Carolina Court of Appeals" }, "jurisdiction": { "id": 5, "name_long": "North Carolina", "name": "N.C." }, "cites_to": [ { "cite": "625 S.E.2d 894", "category": "reporters:state_regional", "reporter": "S.E.2d", "case_ids": [ 12635096 ], "weight": 3, "year": 2006, "pin_cites": [ { "page": "898" }, { "page": "899", "parenthetical": "internal quotation marks, citations, and brackets omitted" }, { "page": "899" } ], "opinion_index": 0, "case_paths": [ "/se2d/625/0894-01" ] }, { "cite": "471 U.S. 462", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 6205101 ], "weight": 2, "year": 1985, "pin_cites": [ { "page": "473" }, { "page": "541" } ], "opinion_index": 0, "case_paths": [ "/us/471/0462-01" ] }, { "cite": "N.C. Gen. Stat. \u00a7 1-254", "category": "laws:leg_statute", "reporter": "N.C. Gen. Stat.", "year": 2009, "opinion_index": 0 }, { "cite": "348 S.E.2d 782", "category": "reporters:state_regional", "reporter": "S.E.2d", "weight": 2, "year": 1986, "pin_cites": [ { "page": "786" }, { "page": "787" } ], "opinion_index": 0 }, { "cite": "318 N.C. 361", "category": "reporters:state", "reporter": "N.C.", "case_ids": [ 4734507 ], "weight": 2, "year": 1986, "pin_cites": [ { "page": "367" }, { "page": "367" } ], "opinion_index": 0, "case_paths": [ "/nc/318/0361-01" ] }, { "cite": "377 S.E.2d 75", "category": "reporters:state_regional", "reporter": "S.E.2d", "year": 1989, "pin_cites": [ { "page": "78" } ], "opinion_index": 0 }, { "cite": "93 N.C. App. 142", "category": "reporters:state", "reporter": "N.C. App.", "case_ids": [ 8527912 ], "year": 1989, "pin_cites": [ { "page": "146" } ], "opinion_index": 0, "case_paths": [ "/nc-app/93/0142-01" ] }, { "cite": "341 S.E.2d 65", "category": "reporters:state_regional", "reporter": "S.E.2d", "year": 1986, "pin_cites": [ { "page": "67" } ], "opinion_index": 0 }, { "cite": "80 N.C. App. 129", "category": "reporters:state", "reporter": "N.C. App.", "case_ids": [ 8522161 ], "year": 1986, "pin_cites": [ { "page": "132" } ], "opinion_index": 0, "case_paths": [ "/nc-app/80/0129-01" ] }, { "cite": "265 S.E.2d 476", "category": "reporters:state_regional", "reporter": "S.E.2d", "weight": 3, "year": 1980, "pin_cites": [ { "page": "479" }, { "page": "531" }, { "page": "479", "parenthetical": "citation omitted" } ], "opinion_index": 0 }, { "cite": "46 N.C. App. 527", "category": "reporters:state", "reporter": "N.C. App.", "case_ids": [ 8551786 ], "year": 1980, "pin_cites": [ { "page": "530-31" } ], "opinion_index": 0, "case_paths": [ "/nc-app/46/0527-01" ] }, { "cite": "176 N.C. App. 255", "category": "reporters:state", "reporter": "N.C. App.", "case_ids": [ 8300996 ], "weight": 3, "year": 2006, "pin_cites": [ { "page": "258-59" }, { "page": "259-60" }, { "page": "260" } ], "opinion_index": 0, "case_paths": [ "/nc-app/176/0255-01" ] }, { "cite": "208 S.E.2d 223", "category": "reporters:state_regional", "reporter": "S.E.2d", "year": 1974, "pin_cites": [ { "page": "225" } ], "opinion_index": 0 }, { "cite": "23 N.C. App. 67", "category": "reporters:state", "reporter": "N.C. App.", "case_ids": [ 8547757 ], "year": 1974, "pin_cites": [ { "page": "69" } ], "opinion_index": 0, "case_paths": [ "/nc-app/23/0067-01" ] }, { "cite": "268 S.E.2d 873", "category": "reporters:state_regional", "reporter": "S.E.2d", "year": 1980, "pin_cites": [ { "page": "875", "parenthetical": "quoting Haiduven v. Cooper, 23 N.C. App. 67, 69, 208 S.E.2d 223, 225 (1974)" } ], "opinion_index": 0 }, { "cite": "48 N.C. App. 427", "category": "reporters:state", "reporter": "N.C. App.", "case_ids": [ 8551058 ], "year": 1980, "pin_cites": [ { "page": "429", "parenthetical": "quoting Haiduven v. Cooper, 23 N.C. App. 67, 69, 208 S.E.2d 223, 225 (1974)" } ], "opinion_index": 0, "case_paths": [ "/nc-app/48/0427-01" ] } ], "analysis": { "cardinality": 811, "char_count": 18711, "ocr_confidence": 0.726, "pagerank": { "raw": 4.03580807328026e-08, "percentile": 0.12981857243414577 }, "sha256": "2f6fce820d60a3043a5279213d96413ace5c45782762a161ea2f54fedcb247e1", "simhash": "1:bfebf72de6ce9778", "word_count": 2897 }, "last_updated": "2023-07-14T17:12:23.503415+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [ "Judges HUNTER, ROBERT C., and ERVIN concur." ], "parties": [ "EVONIK ENERGY SERVICES GMBH, Plaintiff v. FRANK EBINGER, EBINGER KATALYSATORSERVICE GMBH & CO. KG, ENVICA GMBH N/K/A EBINGER GMBH, ENVICA KAT GMBH, AND EBINGER VERWALTUNGS GMBH Defendants" ], "opinions": [ { "text": "STEPHENS, Judge.\nFactual and Procedural Background\nOn 21 June 2000, Maik Blohm (\u201cBlohm\u201d), a German citizen, and Katalysatorservice GmbH (\u201cKAS\u201d), a German corporation, entered into an employment agreement, the terms of which provided that \u201cBlohm shall treat all internal corporate matters that have been entrusted to him or that he has otherwise been privy to as confidential. This obligation shall continue beyond the termination of the employment relationship.\u201d Subsequently, KAS\u2019 name was changed to ENVICA Kat GmbH (\u201cENVICA Kat\u201d), and Blohm and ENVICA Kat executed another employment agreement, which again provided that \u201cBlohm shall maintain the strictest secrecy about all operational and business matters and processes of ENVICA Kat which become known to him in his work and its surrounding circumstances both during the employment relationship and after its termination.\u201d In June 2004, Blohm left ENVICA Kat.\nOn 16 December 2005, patent application number 05 027 634.4 (the \u201cEuropean Patent\u201d) was filed with the European Patent Office; Blohm was listed as co-inventor on the patent application. Between 15 December 2006 and 1 April 2009, patent application numbers 11/640,475, 12/384,122, and 12/384,159 (the \u201cUnited States Applications\u201d) were filed with the United States Patent Office; each application named Blohm as a co-inventor and listed the filing date of the European Patent as the \u201cForeign Application Priority Date.\u201d Sometime thereafter, Blohm transferred ownership of the European Patent and the United States Applications to Plaintiff Evonik Energy Services GmbH (\u201cEvonik\u201d), a German corporation whose wholly-owned subsidiary Evonik Energy Services LLC is a North Carolina company.\nOn 29 June 2009, Frank Ebinger, \u00f3n behalf of Ebinger GmbH, of which Ebinger Kat is a wholly-owned subsidiary, sent a letter to Blohm informing him that Ebinger GmbH\u2019s \u201cresearch has shown that [the European Patent] contains information that was almost exclusively obtained within the context of your work for our company.\u201d The letter also stated that Blohm\u2019s employment agreement contains a non-disclosure clause \u201cthat prohibits the dissemination of such information [] after the employment relationship has been terminated[,]\u201d and that Ebinger GmbH \u201cwill hold [Blohm] liable for any direct and/or indirect damages that [his] breach of contract might create for [Ebinger GmbH].\u201d\nOn 16 October 2009, counsel for Ebinger Kat sent another letter to Blohm, informing Blohm that his \u201cconsultancy contract\u201d with Evonik \u201cconstitutes another grave violation of your [] obligation to maintain confidentiality.\u201d\nOn 17 November 2009, Evonik filed in Mecklenburg County Superior Court a complaint against Frank Ebinger, Ebinger Kat, \u201cEnvica GmbH n/k/a Ebinger GmbH,\u201d ENVIGA Kat, and \u201cEbinger Verwaltungs GmbH\u201d (collectively \u201cDefendants\u201d). In the complaint, Evonik (1) alleged that Evonik is the owner and assignee of the United States Applications; (2) alleged that Defendants sent to Blohm letters in which Defendants asserted ownership of the United States Applications; and (3) sought \u201ca declaration that [Evonik] is the lawful owner of the [United States Applications].\u201d\nOn 21 April 2010, Defendants moved to dismiss the complaint under North Carolina Rule of Civil Procedure 12(b)(6) based on an alleged lack of both subject matter and personal jurisdiction. The parties submitted affidavits, exhibits, and memoranda regarding Defendants\u2019 motion to dismiss, and on 21 May 2010, following a 12 May 2010 hearing, the trial court, the Honorable W. Robert Bell presiding, denied Defendants\u2019 motions. On 26 May 2010, Defendants gave notice of appeal from the trial court\u2019s order.\nDiscussion\nIn the order denying Defendants\u2019 motion to dismiss, the trial court did not make any findings to support its conclusion that \u201cDefendants are subject to personal jurisdiction in the State of North Carolina and that the exercise of jurisdiction over [] Defendants satisfies due process.\u201d Where no such findings are made, \u201cit will be presumed that the judge, upon proper evidence, found facts sufficient to support his judgment.\u201d City of Salisbury v. Kirk Realty Co., 48 N.C. App. 427, 429, 268 S.E.2d 873, 875 (1980) (quoting Haiduven v. Cooper, 23 N.C. App. 67, 69, 208 S.E.2d 223, 225 (1974)). On appeal, we \u201creview the record to determine whether it contains competent evidence to support the trial court\u2019s presumed findings to support its ruling that [Defendants are] subject to personal jurisdiction in the courts of this state.\u201d A.R. Haire, Inc. v. St. Denis, 176 N.C. App. 255, 258-59, 625 S.E.2d 894, 898 (2006).\nWe note that on appeal, in support of its argument that the trial court properly determined that this State\u2019s exercise of personal jurisdiction over Defendants \u201csatisfies due process,\u201d Evonik offers evidence of Defendants\u2019 electronic communications with \u201cSCR Tech,\u201d a North Carolina corporation based in Charlotte. Evonik contends that these communications establish, inter alia, a continuing business relationship between Defendants and SCR Tech. Evonik attempted to put this same evidence before the trial court at the hearing on Defendants\u2019 motion to dismiss, but the trial court declined Evonik\u2019s \u201coffer\u201d of \u201cthe opportunity [] to review some of these [communications] in camera if you think it would assist the Court,\u201d stating that the court was \u201cgoing to stick with the briefs right now, thank you.\u201d The hearing ended with that exchange, and there is no indication that the trial court later accepted the offer to review the additional evidence. In light of the trial court\u2019s decision not to review any of this evidence, we think it illogical to presume that the trial court made a finding of fact regarding this evidence when the court had declined to consider the evidence at the hearing and had no further opportunity to review it. To the extent there would be a presumption that the trial court properly considered this evidence and made findings regarding the evidence, we conclude that such a presumption has been rebutted. Accordingly, we will not presume findings by the trial court based upon evidence of electronic communications purporting to establish additional contacts between Defendants and North Carolina.\nWithout this additional evidence of Defendants\u2019 contacts, the only evidence offered by Evonik to satisfy its burden of proving North Carolina\u2019s personal jurisdiction over Defendants is as follows: Frank Ebinger\u2019s participation as a third-party witness in the SCR Tech litigation; Frank Ebinger\u2019s 2008 meeting in North Carolina with the president of SCR Tech, from which no \u201cbusiness transaction\u201d resulted; the two letters to Blohm; and Defendants\u2019 contractual obligations under the 2005 settlement agreement following the sale of SCR Tech. For the following reasons, we find this evidence, and those presumed findings logically supported by this evidence, insufficient to support the trial court\u2019s conclusion that North Carolina\u2019s exercise of personal jurisdiction over Defendants satisfies due process.\nTo satisfy the requirements of the due process clause, there must exist certain minimum contacts between the non-resident defendant and the forum such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice. There must be some act by which the defendant purposefully avails himself of the privilege of conducting activities within the forum state, thus invoking the benefits and protections of its laws.\nA.R. Haire, 176 N.C. App. at 259-60, 625 S.E.2d at 899 (internal quotation marks, citations, and brackets omitted).\nIn determining whether minimum contacts exist, the court looks at several factors, including: (1) \u201cthe quantity of the contacts;\u201d (2) \u201cthe nature and quality of the contacts;\u201d (3) \u201cthe source and connection of the cause of action with those contacts;\u201d (4) the interest of the forum state; and (5) the convenience to the parties. Phoenix Am. Corp. v. Brissey, 46 N.C. App. 527, 530-31, 265 S.E.2d 476, 479 (1980). These factors are not to be applied mechanically; rather, the court must weigh the factors and determine what is \u201cfair and reasonable and just\u201d to both parties. Id. at 531, 265 S.E.2d at 479 (citation omitted). \u201cNo single factor controls, but they all must be weighed in light of fundamental fairness and the circumstances of the case.\u201d B.F. Goodrich Co. v. Tire King of Greensboro, Inc., 80 N.C. App. 129, 132, 341 S.E.2d 65, 67 (1986).\nRegarding the quantity and quality of Defendants\u2019 contacts in this case, we note that the five contacts alleged by Evonik \u2014 two letters written from Germany, Frank Ebinger\u2019s participation as a witness in an unrelated litigation, Frank Ebinger\u2019s attendance at an unrelated business meeting, and a 2005 settlement agreement \u2014 are sporadic rather than continuous, and none of the contacts shows Defendants purposefully availing themselves \u201cof the privilege of conducting activities within the forum state\u201d or \u201cinvoking the benefits and protections of its laws.\u201d A.R. Haire, 176 N.C. App. at 260, 625 S.E.2d at 899. Although, as a general matter, Frank Ebinger\u2019s participation as a witness in a North Carolina proceeding may appear to be an invocation of the benefits of North Carolina laws, as previously held by this Court, participation in an unrelated litigation in the forum state is insufficient to support a finding that a defendant\u2019s contacts properly subject that defendant to personal jurisdiction in our courts. See Buck v. Heavner, 93 N.C. App. 142, 146, 377 S.E.2d 75, 78 (1989) (in ruling that the trial court improperly found defendant subject to personal jurisdiction in North Carolina, noting that \u201c[defendant's general appearance in the custody and support action was a submission to jurisdiction in that action only and does not waive his right to object to jurisdiction in separate causes of action.\u201d). Furthermore, while Evonik may be correct in asserting that ENVICA Kat\u2019s signature on a settlement agreement involving North Carolina parties subjects ENVICA Kat to a \u201ccontinuing obligation\u201d to North Carolina residents, our Supreme Court has held that a single contract between a non-party state resident and nonresident defendant does not automatically confer jurisdiction where that contract does not have a substantial connection with the State. See Tom, Togs, Inc. v. Ben Elias Indus. Corp., 318 N.C. 361, 367, 348 S.E.2d 782, 786 (1986) (\u201cAlthough a contractual relationship between a North Carolina resident and an out-of-state party alone does not automatically establish the necessary minimum contacts with this State, nevertheless, a single contract may be a sufficient basis for the exercise of in personam jurisdiction if it has a substantial connection with this State.\u201d (emphasis in original)). The \u201ccontinuing obligation\u201d referred to by Evonik is the contract provision stating that ENVICA Kat will not use certain licensed intellectual property in \u201cNAFTA Territories.\u201d Such an obligation to refrain from operating in \u201cNAFTA Territories,\u201d which include North Carolina, can hardly be seen as a contractual obligation with a \u201csubstantial connection\u201d to North Carolina. In our view, the quantity and quality of Defendants\u2019 contacts with North Carolina do not support a finding that the due process requirement of minimum contacts has been satisfied in this case.\nFurthermore, regarding \u201cthe source and connection of the cause of action with those contacts,\u201d we conclude that Defendants\u2019 contacts are not the source of Evonik\u2019s cause of action. Evonik contends on appeal that the sources of the cause of action are Frank Ebinger\u2019s participation in the SCR Tech litigation and the letters to Blohm. However, while these actions by Defendants may have prompted Evonik to initiate the present litigation, these actions are not the source of the cause of action and did not \u201cgive rise to\u201d the litigation. Evonik\u2019s claim is not a defamation claim, where the cause of action would arise from statements by Defendants. Rather, it is a declaratory judgment claim, which is only available when a party is asserting rights \u201cunder a deed, will, written contract or other writings constituting a contract\u201d or when a party\u2019s rights are affected \u201cby a statute, municipal ordinance, contract or franchise.\u201d N.C. Gen. Stat. \u00a7 1-254 (2009). Evonik is seeking a declaration that it is the owner of the United States Applications. There have been no direct challenges to Evonik\u2019s ownership based on the assignment of the United States Applications. The only challenge to Evonik\u2019s ownership is the \u201ccloud\u201d placed on that ownership by a series of hypothetical circumstances rooted initially in Frank Ebinger\u2019s and Ebinger Kat\u2019s assertion that Blohm\u2019s application for the European Patent was a violation of an employment agreement between Blohm and KAS/ENVICA Kat. As such, the sources of Evonik\u2019s declaratory judgment claim are the employment contracts, which notably were signed by the parties in Germany and are governed by German law. Accordingly, we conclude that Defendants\u2019 contacts are only tangentially connected to the cause of action and are certainly not the source of Evonik\u2019s declaratory judgment claim.\nThe next factor in the minimum contacts analysis \u2014 the interest of \u2022 the forum state \u2014 likewise militates against North Carolina\u2019s exercise of personal jurisdiction in this case. In order for our courts to resolve Evonik\u2019s claim and fully determine its ownership of the United States Applications, we would have to ascertain (1) whether Blohm actually violated the non-disclosure claus.es of the employment agreements (a matter of German contract law currently being considered in German courts); (2) whether Blohm\u2019s violation would affect his inventor status on the European Patent (a matter of European patent law); and (3) whether a change in the inventor status on the European Patent would affect Blohm\u2019s claim of priority to the European Patent and his inventor status on the United States Applications (a matter of United States patent law). While our courts may have an interest in providing a forum for Evonik to address its grievances, Tom Togs, 318 N.C. at 367, 348 S.E.2d at 787 (\u201cIt is generally conceded that a state has a \u2018manifest interest\u2019 in providing its residents with a convenient forum for redressing injuries inflicted by out-of-state actors.\u201d (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 473, 85 L. Ed. 2d 528, 541 (1985))), we clearly have no interest in pronouncing on the effects of a breach of contract under German law on matters of European and United States Patent law. Surely the principles of comity and preemption support a finding that our Courts have little interest in resolving this matter.\nFinally, regarding the factor of convenience for the parties, we conclude that, in spite of Frank Ebinger\u2019s two trips to North Carolina, it would be inconvenient for Defendants to defend this matter in North Carolina based on their location in Germany. This is especially so in light of our conclusions that (1) Defendants have few contacts with North Carolina; (2) Defendants\u2019 contacts are sporadic; (3) Defendants\u2019 contacts are not the source of, and are not closely related to, Evonik\u2019s cause of action; and (4) the State of North Carolina does not have a strong interest in resolving this matter.\nBased on the foregoing, we conclude that Defendants do not have the requisite minimum contacts with this State and that the trial court erroneously found that this State\u2019s exercise of personal jurisdiction over Defendants would not violate Defendants\u2019 due process rights. Accordingly, the order of the trial court is\nREVERSED.\nJudges HUNTER, ROBERT C., and ERVIN concur.\n. ENVICA Kat has since changed its name to Ebinger Katalysatorservice GmbH (\u201cEbinger Kat\u201d).\n. The record contains what appears to be the actual patent \u201cEP 1 797 954 Al,\u201d which lists the \u201cAnmeldenummer,\u201d or application number, as \u201c05 027 634.4.\u201d\n. According to Frank Ebinger\u2019s affidavit, a \u201ccriminal complaint\u201d was made \u201cagainst Blohm in Germany for misappropriation of [Ebinger Kat\u2019s] trade secrets.\u201d\n. In 2001, ENVIGA Kat, along with another company, co-founded \u201cSCR Tech GmbH,\u201d which in turn founded \u201cthe American company SCR Tech LLC in Charlotte], North Carolina].\u201d In 2005, SCR Tech, ENVICA Kat, and another company entered into a settlement agreement, whereby ENVICA Kat agreed to sell SCR Tech to the other company. Currently, litigation involving trade secret misappropriation is pending between Evonik and SCR Tech. Evonik contends that Defendants have actively participated in, and supported SCR Tech in, the \u201cSCR Tech litigation.\u201d Evonik further contends that Defendants and SCR Tech have corresponded with each other in efforts to form a long-term business partnership.\n. For ease of discussion, we assume, without deciding, that all of the Defendants, both corporations and persons, are so interrelated that evidence supporting personal jurisdiction over one defendant would support personal jurisdiction over all Defendants.\n. \u201cNAFTA\u201d is an acronym for the North American Free Trade Agreement. The signatories to this agreement are Canada, the United States, and Mexico.\n. Evonik contends that by instituting a trade secret misappropriation action against Blohm, Ebinger Kat has \u201cplaced a cloud\u201d on Evonik\u2019s ownership of the United States Applications. Evonik contends that \u201c[a]n adverse judgment against [] Blohm, who is co-inventor of the [United States Applications], could affect the ownership status of the [United States Applications].\u201d (Emphasis added).", "type": "majority", "author": "STEPHENS, Judge." } ], "attorneys": [ "Alston & Bird, LLP, by Benjamin F. Sidbury, Mark Vasco, Scott Stevens, and Debra Lofano, for Plaintiff", "Robinson Bradshaw & Hinson, PA., by Mark W. Merritt and Lawrence C. Moore, III, for Defendants." ], "corrections": "", "head_matter": "EVONIK ENERGY SERVICES GMBH, Plaintiff v. FRANK EBINGER, EBINGER KATALYSATORSERVICE GMBH & CO. KG, ENVICA GMBH N/K/A EBINGER GMBH, ENVICA KAT GMBH, AND EBINGER VERWALTUNGS GMBH Defendants\nNo. COA10-1299\n(Filed 7 June 2011)\nJurisdiction\u2014 personal jurisdiction \u2014 due process \u2014 lack of minimum contacts\nThe trial court erred in a declaratory judgment action by concluding that exercising personal jurisdiction would not violate defendants\u2019 due process rights. Defendants did not have the requisite minimum contacts with North Carolina, defendants\u2019 contacts were not the source of or closely related to this cause of action, and North Carolina did not have a strong interest in resolving the effects of a breach of contract under German law on matters of European and United States patent law.\nAppeal by Defendants from order entered 21 May 2010 by Judge W. Robert Bell in Mecklenburg County Superior Court. Heard in the Court of Appeals 22 March 2011.\nAlston & Bird, LLP, by Benjamin F. Sidbury, Mark Vasco, Scott Stevens, and Debra Lofano, for Plaintiff\nRobinson Bradshaw & Hinson, PA., by Mark W. Merritt and Lawrence C. Moore, III, for Defendants." }, "file_name": "0385-01", "first_page_order": 395, "last_page_order": 402 }